2012 Reissue Applications Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure [R-2]

Questions of "fraud," "inequitable conduct," or violation of "duty of disclosure" or "candor and good faith" can arise in reissue applications.

REQUIREMENT FOR "ERROR WITHOUT ANY DECEPTIVE INTENTION"

Both 35 U.S.C. 251 and 37 CFR 1.175 promulgated pursuant thereto require that the error must have arisen "without any deceptive intention." In re Heany, 1911 C.D. 138, 180 (1911), unequivocally states:

Where such a condition [fraudulent or deceptive intention] is shown to exist the right to reissue the patent is forfeited.

Similarly, the court in In re Clark, 522 F.2d 623, 627, 187 USPQ 209, 213 (CCPA 1975) indicated:

Reissue is not available to rescue a patentee who had presented claims limited to avoid particular prior art and then had failed to disclose that prior art . . . after that failure to disclose has resulted in invalidating of the claims.

It is clear that "fraud" cannot be purged through the reissue process. See conclusions of Law 89 and 91 in Intermountain Research and Eng’g Co. v. Hercules Inc., 171 USPQ 577, 631-32 (C.D. Cal. 1971).

Clearly, where several patents or applications stem from an original application which contained fraudulent claims ultimately allowed, the doctrine of unclean hands bars allowance or enforcement of any of the claims of any of the applications or patents. See Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 245, 19 USPQ 228, 230 (1933); East Chicago Machine Tool Corp. v. Stone Container Corp., 181 USPQ 744, 748 (N.D. Ill.), modified, 185 USPQ 210 (N.D. Ill. 1974). See also Chromalloy American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 173 USPQ 295 (D.Del. 1972) and Strong v. General Electric Co., 305 F. Supp. 1084, 162 USPQ 141 (N.D. Ga. 1969), aff’d, 434 F.2d 1042, 168 USPQ 8 (5th Cir. 1970), cert. denied, 403 U.S. 906 (1971) where fraud or inequitable conduct affecting only certain claims or only one of related patents was held to affect the other claims or patent. Clearly, "fraud" practiced or attempted in an application which issues as a patent is "fraud" practiced or attempted in connection with any subsequent application to reissue that patent. The reissue application and the patent are inseparable as far as questions of "fraud," "inequitable conduct," or "violation of the duty of disclosure" are concerned. See In re Heany, supra; and Norton v. Curtiss, 433 F.2d 779, 792, 167 USPQ 532, 543 (CCPA 1970), wherein the court stated:

We take this to indicate that any conduct which will prevent the enforcement of a patent after the patent issues should, if discovered earlier, prevent the issuance of the patent.

Clearly, if a reissue patent would not be enforceable after its issue because of "fraud," "inequitable conduct" or "violation of the duty of disclosure" during the prosecution of the patent sought to be reissued, the reissue patent application should not issue. Where no investigation is needed to establish such circumstances, an appropriate remedy would be to reject the claims in the application in accordance with 35 U.S.C. 251. See MPEP § 1448.

The examiner is not to make any investigation as to the lack of deceptive intent requirement in reissue applications. Applicant's statement (in the oath or declaration) of lack of deceptive intent will be accepted as dispositive except in special circumstances such as an admission or judicial determination of fraud, inequitable conduct or violation of the duty of disclosure, where no investigation need be made and the fact of the admission or judicial determination exists per se. Also, any admission of fraud, inequitable conduct or violation of the duty of disclosure must be explicit, unequivocal, and not subject to other interpretation. Where a rejection is made based upon such an admission (see MPEP § 1448) and applicant responds with any reasonable interpretation of the facts that would not lead to a conclusion of fraud, inequitable conduct or violation of the duty of disclosure, the rejection should be withdrawn. Alternatively, if applicant shows that the admission noted by the examiner was not in fact an admission, the rejection should also be withdrawn.

2012.01 Collateral Estoppel [R-2]

The Supreme Court in Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 169 USPQ 513 (1971) set forth the rule that once a patent has been declared invalid via judicial inquiry, a collateral estoppel barrier is created against further litigation involving the patent, unless the patentee-plaintiff can demonstrate "that he did not have" a full and fair chance to litigate the validity of his patent in "the earlier case." See also Ex parte Varga, 189 USPQ 209 (Bd. App. 1973). As stated in Kaiser Industries Corp. v. Jones & Laughlin Steel Corp., 515 F.2d 964, 987, 185 USPQ 343, 362 (3rd Cir. 1975):

In fashioning the rule of Blonder-Tongue, Justice White for a unanimous Court made it clear that a determination of patent invalidity, after a thorough and equitable judicial inquiry, creates a collateral estoppel barrier to further litigation to enforce that patent.

Under 35 U.S.C. 251, the Director can reissue a patent only if there is "error without any deceptive intention." The Director is without authority to reissue a patent when "deceptive intention" was present during prosecution of the parent application. See In re Clark, 522 F.2d 62, 187 USPQ 209 (CCPA 1975) and In re Heany, 1911 C.D. 138, 180 (1911). Thus, the collateral estoppel barrier applies where reissue is sought of a patent which has been held invalid or unenforceable for "fraud" or "violation of duty of disclosure" in procuring of said patent. It was held in In re Kahn, 202 USPQ 772, 773 (Comm’r Pat. 1979):

Therefore, since the Kahn patent was held invalid, inter alia, for "failure to disclose material facts of which * * * [Kahn] was aware" this application may be stricken under 37 CFR 1.56 via the doctrine of collateral estoppel as set forth in Blonder-Tongue, supra.

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The Patent and Trademark Office . . . has found no clear justification for not adhering to the doctrine of collateral estoppel under Blonder-Tongue in this case. Applicant has had his day in court. He appears to have had a full and fair chance to litigate the validity of his patent.

See MPEP § 2259 for collateral estoppel in reexamination proceedings.